Michael G Kelber

Trademark pendency is increasing substantially at the USPTO. How is this affecting your practice, and what advice would you give to clients hoping to file?

We have definitely observed significant delays in application examinations and recordations, which can impact our clients’ business. Unfortunately, the delay is out of our control as practitioners, so all we can do is provide our clients with as much notice as possible to set reasonable expectations on the process. Delays in registration can hamper clients’ enforcement efforts, but since priority in the United States is based on use or filing dates, the delay rarely impairs their underlying rights. For clients who are still early in the planning stages of product launches, the delay can even reduce costs for extensions of time for claiming use.

Many are looking to the United States to set standards for platform liability for infringing and counterfeit goods. What impact do you expect the country’s actions to have in this area in the next 12 months?

Right now, there is scrutiny over the immunity enjoyed by e-commerce platforms for speech and conduct of third-party publishers, which is not directed squarely on counterfeiting activity. That said, we have seen significant improvements in e-commerce watch services that enable more efficient market monitoring and enforcement capabilities.

Last year, the metaverse and NFTs were headline news when it came to brand protection. Twelve months on, how has the conversation on these topics shifted, and what action should brand owners be taking?

Recent commercial failures of leading NFT exchanges have reverberated throughout the NFT market and seem to have, at least temporarily, slowed the speed at which companies are embracing the metaverse. That said, we continue to see widespread interest and activity from our clients in the evolution and adoption of blockchain technology. We plan to continue to invest in this developing space as it evolves and new opportunities and risks arise.

If you could change one thing about prosecuting trademarks before the USPTO, what would it be, and do you think it is likely to happen?

The USPTO’s efforts to combat trademark squatting by enforcing more stringent restrictions on specimens are, for the most part, a welcome development. However, one unfortunate by-product appears to be more scrutiny on legitimate applications. This scrutiny can make it more costly for brand owners to build and maintain their trademark portfolios. It would be helpful to see more consistency in acceptable goods and services descriptions and specimen reviews. Over the last 25 years, we have observed trends in the types of refusals issued, and like any large organisation, it takes a little time to achieve consistency; we hope to see some improvements.

You are celebrated for your work in combatting counterfeiting. How are you handling the growing rise in online counterfeiting and the post-pandemic bounce-back of offline counterfeiting – and what do these strategies look like?

We are indeed seeing an increase in counterfeiting activity. As a firm, we lead by investing in emerging monitoring and enforcement platforms and staying abreast of legal and technological developments. This enables us to cost-effectively monitor and take down counterfeit and infringing products for our brand-owning clients. When offenders have infringed a client’s marks or counterfeited a client’s products, we collaborate with law enforcement and zealously advocate to protect their property and take legal action when required.

Michael G Kelber

Partner and Co-chair, IP Practice Group
[email protected]

Michael G Kelber, co-chair of Neal Gerber Eisenberg’s IP practice group and a member of its executive committee, helps enterprises and entrepreneurs strategically develop and protect extensive global IP portfolios. He has prepared and prosecuted thousands of successful US and foreign trademark and patent applications and has served as lead counsel in trials before state and federal courts throughout the country. He represents clients in all phases of complex trademark, copyright and patent disputes

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